OPPOSITION No B 2 266 651

Daw SE, Roßdörfer Str. 50, 64372 Ober-Ramstadt, Germany (opponent), represented by FPS Partnerschaft Von Rechtsanwälten MBB, Eschersheimer Landstr. 25-27, 60322 Frankfurt am Main, Germany (professional representative)

a g a i n s t

Pavimenti Alpina S.R.L., Via Colle Di Nava, 24/C, 12060 Magliano Alpi (CN), Italy (holder), represented by Ufficio Internazionale Brevetti Ing. C. Gregorj S.R.L., Via Muratori 13/B, 20135 Milano, Italy (professional representative).

On 29/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 266 651 is partially upheld, namely for the following contested goods:

Class 19: Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen.

2.        International registration No 1 152 578 is refused protection in respect of the European Union for all of the above goods. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods of international registration designating the European Union No 1 152 578, namely against all the goods in Class 19. The opposition is based on European Union trade mark registration No 497 263. The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods

The goods on which the opposition is based are the following:

Class 2: Paints, varnishes, lacquers, glazes, wood preservatives, primers (included in class 2), anti-rust preparations, fillers; binding agents for paints; bactericidal/fungicidal paints; thinners for paints.

Class 19: Natural and artificial stone, building materials (not of metal), mortar, lacquers for buildings, protective agents for buildings (included in class 19), synthetic resin plaster.

The contested goods are the following:

Class 19: Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 19

The contested building materials (non-metallic) are identically contained in both lists
of goods (including synonyms).

The contested non-metallic rigid pipes for building are included in the broad category of the opponent’s building materials (non-metallic). They are identical.

The contested asphalt, pitch and bitumen are similar to a low degree to the
opponent’s building materials (not of metal). These goods have similar purposes,
namely to be used for construction and building. They can target the same public (a
public looking for construction materials) and can be distributed through the same
channels.

The contested non-metallic transportable buildings are dissimilar to the opponent’s
goods in Classes 2 and 19. Non-metallic transportable buildings are complex,
prefabricated, finished products which can easily be dismantled and reassembled
and transported from one location to another. They may include trade-show booths
and model houses that are transported to exhibitions for temporary installation.
Although the contested goods may contain materials included in the opponent’s list of
goods, a connection sufficiently close for a finding of similarity cannot be established.
The purpose of a transportable building as a finished product and the purpose of
building materials required for constructing buildings or that of paints and lacquers are clearly different. Consumers are aware that producers of transportable buildings generally do not produce the building materials required to make them and, therefore, will not assume that the finished building and all its components have the same commercial origin.

The contested monuments, not of metal are also dissimilar to the opponent’s goods
in Classes 2 and 19. They are different from all of the opponent’s goods in terms of
nature, intended purpose and method of use, and these goods are not in competition
with or complementary to each other. The mere fact that some of the building
materials covered by the earlier mark may form part of various monuments is not
sufficient for a finding of similarity between them.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical and similar to a low degree are specialised goods directed at the public at large and at business customers with specific professional knowledge or expertise.

The level of attention will be higher than average due to the specialised nature of the goods.

3. The signs

APLINA
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The earlier sign is a word mark consisting of the word ‘ALPINA’ that will be understood as ‘alpine’ in some languages such as Spanish. As it is not descriptive, allusive or otherwise weak for the goods at hand, it is considered distinctive. The mark has no elements that could be considered dominant.

The contested mark is a figurative mark consisting of a distinctive word ‘ALPINA’ written in a stylised letters having the meaning for part of the relevant public as explained, and a word element ‘NATURALMENTEPARQUET’ written below in a small font that will be understood by Spanish-speaking consumers as ‘naturally parquet’ and is therefore weak for building materials (non-metallic) and for Spanish-speaking consumers. Moreover, due to its size and position it is not noticeable at first sight and has a limited effect on the comparison of the signs. The element ‘ALPINA’ is the dominant element.

Visually and aurally, the signs coincide in ‘ALPINA’ which forms the whole of the earlier mark. They differ in the word element ‘NATURALMENTEPARQUET’ which has a limited effect on the comparison of the signs due to its size and position and which is, moreover, weak for part of the goods and part of the relevant public. The signs differ also visually in the stylisation of the contested sign. However, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

Moreover, the marks have their beginning elements in common and it is this part that generally catches the attention of the consumer.

Therefore, the signs are highly similar visually and aurally.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For those who associate the word ‘ALPINA’ with a meaning (such as Spanish-speaking consumers), the marks are conceptually highly similar. For the remaining part of the relevant public neither of the signs has a meaning and a conceptual comparison is not possible; the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection in Germany. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

In the present case, it has been established that the contested goods are partly identical and similar to a low degree to the opponent’s goods and partly dissimilar. The signs are aurally and visually similar to a high degree, and conceptually highly similar for part of the relevant public to the extent that they coincide in the word element ‘ALPINA’, which is fully distinctive for the goods in question.

The earlier mark is fully reproduced in the contested sign and is the element that most attracts the attention of the relevant public in the contested sign. Thus, the imperfect image which the public will keep in its mind will be very closely connected to it. Moreover, the trade marks have their beginnings in common and it is this part that generally catches the attention of the public consumer. Consequently, while it is true that the trade marks have certain differences between them, they are confined to weak or secondary elements and aspects. Such differences do not allow the public to safely distinguish between the marks based on the presence in each of them of the distinctive term ‘ALPINA’. The presence of this element in both marks will make it likely for the relevant public to believe erroneously that the goods which each of the marks cover have the same commercial origin or that there is a commercial or industrial link between the two signs. This is even more valid for part of the relevant public which associates the marks with a similar concept.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical and similar to a low degree to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use in Germany as claimed by the opponent and in relation to identical and similar to various degrees goods. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Justyna GBYL

Anna BAKALARZ

Boyana NAYDENOVA

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.